Appeal No. 2002-1250 Page 7
Application No. 09/200,057
The enablement rejection
We will not sustain the rejection of claims 1, 3, 4, 6 to 9, 18 and 19 under
35 U.S.C. § 112, first paragraph.
An analysis of whether the claims under appeal are supported by an enabling
disclosure requires a determination of whether that disclosure contained sufficient
information regarding the subject matter of the appealed claims as to enable one skilled
in the pertinent art to make and use the claimed invention. The test for enablement is
whether one skilled in the art could make and use the claimed invention from the
disclosure coupled with information known in the art without undue experimentation.
See United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
In order to make a nonenablement rejection, the examiner has the initial burden
to establish a reasonable basis to question the enablement provided for the claimed
invention. See In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by the disclosure). A
disclosure which contains a teaching of the manner and process of making and using
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